Dianna Serio et al.

Patent Trials and Appeals Board

Feb 12, 2020

14169921 - (D) (P.T.A.B. Feb. 12, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/169,921 01/31/2014 Dianna SERIO CORLOG.024US 2838
113027 7590 02/12/2020
Muncy, Geissler, Olds & Lowe, P.C. CoreLogic113027
4000 Legato Road
Suite 310
Fairfax, VA 22202
EXAMINER
SEOH, MINNAH L
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
02/12/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
eofficeaction@appcoll.com
meo.docket@mg-ip.com
meo@mg-ip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DIANNA SERIO, DARREN TEETS, SUSAN ALLEN,
FELICE KESSELRING, and MATTHIAS BLUME
Appeal 2018-005727
Application 14/169,921
Technology Center 3600
Before JENNIFER S. BISK, LARRY J. HUME, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant,1 CoreLogic Solutions,
LLC, appeals from the Examiner’s decision rejecting claims 1–6 and 15–20.
Appellant has withdrawn claims 7–14 from consideration in response to a
restriction requirement. Final Act. 2. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as CoreLogic
Solutions LLC. Appeal Br. 3.
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STATEMENT OF THE CASE2
The claims are directed to a method and system for performing owner
association analytics. See Spec. (Title). In particular, Appellant’s disclosed
embodiments and claimed invention “relate[] to computer processes for
performing owner association (‘OA’) analytics for a real estate property.”
Spec. ¶ 2.
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added to contested prior-art limitations):
Exemplary Claims
1. A non-transitory computer readable storage
medium comprising instructions which, when executed by a
computer system that includes a data processor and is
connected to at least one data repository, perform a method
comprising:
(a) accessing, by the computer system from the at least
one data repository through a communication channel, owner
association (OA) data associated with a plurality of real estate
properties;
(b) generating, by the data processor of the computer
system, an OA amount model based at least in part on the
accessed OA data associated with the plurality of real estate
properties, wherein the generating comprises:
assigning each property in a geographic area to a
group based at least in part on a location of each
property;

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Jan. 30, 2018); Reply Brief (“Reply Br.,” filed May 15, 2018); Examiner’s
Answer (“Ans.,” mailed Mar. 15, 2018); Final Office Action (“Final Act.,”
mailed Apr. 3, 2017); and the original Specification (“Spec.,” filed
Jan. 31, 2014) (claiming benefit of US Application filed 61/892,216, filed
Oct. 17, 2013).
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iteratively merging pairs of geospatially adjacent
groups based on the characteristics of assigned
properties in the geospatially adjacent groups being
similar; and
iteratively inferring an OA amount for each
property in the geographic area by inferring an OA
amount for each property in a respective merged pair of
geospatially adjacent groups for which OA amount is not
known based at least in part on an OA amount for a
property in the same group for which the OA amount is
known;
(c) receiving, by the computer system through a network
communication channel, identification information associated
with a subject property;
(d) determining, by the data processor of the computer
system, an estimated OA amount for the subject property by
applying the OA amount model to the property; and
(e) storing, by the data processor of the computer system
through the communication channel, the estimated OA amount
in the at least one data repository.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Jost et al. (“Jost”) US 5,361,201 Nov. 1, 1994
Cagan US 2006/0085234 A1 Apr. 20, 2006
Brooks US 2008/0189121 A1 Aug. 7, 2008
Rejections on Appeal
R1. Claims 1–6 and 15–20 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to a judicial exception (i.e., a law
of nature, a natural phenomenon, or abstract idea) without significantly
more. Final Act. 2.
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R2. Claims 1, 3–6, and 15–20 stand rejected under 35 U.S.C. § 103
as being unpatentable over the combination of Jost and Brooks. Final Act.
14.
R3. Claim 2 stands rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Jost, Brooks, and Cagan. Final
Act. 37.
CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 5–27) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of patent-ineligible
subject matter Rejection R1 of claims 1–6 and 15–20 on the basis of
representative claim 1; and we decide the appeal of obviousness Rejection
R2 of claims 1, 3–6, and 15–20 on the basis of representative claim 1.
Remaining claim 2 in Rejection R3, not argued separately, stands or
falls with independent claim 1 from which it depends.3
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).

3 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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We disagree with Appellant’s arguments with respect to claims 1–6
and 15–20 and, unless otherwise noted, we incorporate by reference herein
and adopt as our own: (1) the findings and reasons set forth by the Examiner
in the action from which this appeal is taken, and (2) the reasons and
rebuttals set forth in the Examiner’s Answer in response to Appellant’s
arguments. We highlight and address specific findings and arguments
regarding claim 1 for emphasis as follows.
1. § 101 Rejection R1 of Claims 1–6 and 15–20
Issue 1
Appellant argues (Appeal Br. 5–19; Reply Br. 2–3) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is in error. These contentions present us with the
following issue:
Under the USPTO’s Revised Guidance, informed by our governing
case law concerning 35 U.S.C. § 101, is claim 1 patent-ineligible under
§ 101?
Principles of Law
A. 35 U.S.C. § 101
An invention is patent-eligible if it is a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.4
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include

4 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as “Step 1” in the USPTO’s patent-
eligibility analysis under § 101. MPEP § 2106.
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implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)
(citing Mayo, 566 U.S. at 75–77). In accordance with that framework, we
first determine what concept the claim is “directed to.” See Alice, 573 U.S.
at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk . . . .”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diehr, 450 U.S. at 191); “tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores”
(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853)));
and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v.
Deener, 94 U.S. 780, 785 (1876))).
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In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held “[a] claim drawn to subject matter otherwise statutory
does not become nonstatutory simply because it uses a mathematical
formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view
respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (citation omitted) (citing Benson and Flook); see, e.g., id. at 187 (“It is
now commonplace that an application of a law of nature or mathematical
formula to a known structure or process may well be deserving of patent
protection.”).
Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under
this guidance, we must therefore ensure at step one that we articulate what
the claims are directed to with enough specificity to ensure the step one
inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘“inventive
concept”’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
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that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
B. USPTO Revised Guidance
The PTO recently published revised guidance in the Federal Register
concerning the application of § 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter
“Revised Guidance”) (https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf).
Under the Revised Guidance, we first look to whether the claim
recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods
of organizing human activity such as a fundamental economic
practice, or mental processes);5 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual for Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).6
See Revised Guidance 52–53.

5 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance
(hereinafter “Step 2A(i)”).
6 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance
(hereinafter “Step 2A(ii)”).
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional”
in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.7
See Revised Guidance 56.
Step 2A(i) – Abstract Idea
Informed by our judicial precedent, the Revised Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
(a) Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity —
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
(c) Mental processes—concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).

7 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the
Supreme Court’s two-step framework, described in Mayo and Alice.
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Revised Guidance 52 (footnotes omitted).
Under the Revised Guidance, if the claim does not recite a judicial
exception (a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Revised Guidance.8
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
Step 2A(ii) – Practical Application
If a claim recites a judicial exception in Step 2A(i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception(s); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.

8 In the rare circumstance in which an examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
of the Guidance for analyzing the claim should be followed. See Revised
Guidance, Section III.C.
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The seven identified “practical application” sections of the MPEP,9
cited in the Revised Guidance under Step 2A(ii), are:
(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05(c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05(f) Mere Instructions To Apply An
Exception
(6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
See Revised Guidance 55.
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. See Revised Guidance 54. If not, then analysis
proceeds to Step 2B.
Step 2B – “Inventive Concept” or “Significantly More”
Under our reviewing courts’ precedent, it is possible that a claim that
does not “integrate” a recited judicial exception under Step 2A(ii) is
nonetheless patent eligible. For example, the claim may recite additional

9 See MPEP §§ 2106.05(a)–(c), (e)–(h). Citations to the MPEP herein refer
to revision [R-08.2017]. Sections 2106.05(a), (b), (c), and (e) are indicative
of integration into a practical application, while §§ 2106.05(f), (g), and (h)
relate to limitations that are not indicative of integration into a practical
application.
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elements that render the claim patent eligible even though one or more claim
elements may recite a judicial exception.10 The Federal Circuit has held
claims eligible at the second step of the Alice/Mayo test (USPTO Step 2B)
because the additional elements recited in the claims provided “significantly
more” than the recited judicial exception (e.g., because the additional
elements were unconventional in combination).11 Therefore, if a claim has
been determined to be directed to a judicial exception under Revised Step
2A, we must also evaluate the additional elements individually and in
combination under Step 2B to determine whether they provide an inventive
concept (i.e., whether the additional elements amount to significantly more
than the exception itself).12
Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) “Adds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;” or (2) “simply appends well-understood,
routine, conventional activities previously known to the industry, specified

10 See, e.g., Diehr, 450 U.S. at 187.
11 See, e.g., Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1300, 1304 (Fed. Cir. 2016); BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016); DDR
Holdings v. Hotels.com, L.P., 773 F.3d 1245, 1257–59 (Fed. Cir. 2014).
12 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, “[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
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at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.” See Revised Guidance,
Section III.B.13
In the Step 2B analysis, an additional element (or combination of
elements) is not well-understood, routine or conventional unless the
examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the
specification or to a statement made by an applicant during
prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element(s). . . .
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.05(d)(II) as noting the well-
understood, routine, conventional nature of the additional
element(s).
3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element(s). . . .
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element(s). . . .

13 In accordance with existing Step 2B guidance, an Examiner’s finding that
an additional element (or combination of elements) is well understood,
routine, conventional activity must be supported with at least one of the four
specific types of evidence required by the USPTO Berkheimer
Memorandum, as shown above. For more information concerning evaluation
of well-understood, routine, conventional activity, see MPEP § 2106.05(d),
as modified by the USPTO Berkheimer Memorandum (USPTO
Commissioner for Patents Memorandum dated Apr. 19, 2018, “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter
“Berkheimer Memo”).
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See Berkheimer Memo 3–4.
If the Examiner or the Board determines under Step 2B that the
element (or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
However, if a determination is made that the element and combination
of elements do not amount to significantly more than the exception itself, the
claim is ineligible under Step 2B, and the claim should be rejected for lack of
subject matter eligibility.
Analysis
Step 1 – Statutory Category
Claim 1, as a non-transitory computer readable storage medium
(manufacture) claim, recites one of the enumerated categories of eligible
subject matter in 35 U.S.C. § 101. Therefore, the issue before us is whether
it is directed to a judicial exception without significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined the invention of claim 1 “is directed to the
field of ‘performing owner association (OA) analytics for a real estate
property.’” Final Act. 5 (citing Spec. ¶¶ 2, 19, 21). “These steps describe [ ]
performing mathematical operations to analyze data to estimate a value or
quantity, which is similar to concepts identified as abstract ideas by the
courts.” Final Act. 6.
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We conclude claim 1 does not recite the judicial exceptions of either
natural phenomena or laws of nature. We evaluate, de novo, whether
claim 1 recites an abstract idea based upon the Revised Guidance.
First, we look to the Specification to provide context as to what the
claimed invention is directed to. In this case, the Specification discloses that
“[t]he present disclosure relates to computer processes for performing owner
association (‘OA’) analytics for a real estate property.” Spec. ¶ 2.
Appellant’s Abstract describes the invention as:
Computer-based processes are disclosed for mining and
analyzing owner association (OA) data associated with a
plurality of real estate properties and generating an OA amount
model that can be used to estimate OA amounts for a subject
property. The OA data may also be analyzed to identify OA
ratings, OA recommendations, OA delinquency actions, OA
contacts information, OA services information, etc. The
disclosed processes can also use the generated OA amount
model to identify OA amount trends, and determine valuations
and investment metrics for real estate properties.
Spec. 50 (Abstract).
Appellant makes several arguments arguing the eligibility of the
claims on Appeal.
Enfish
In response to the Examiner’s conclusion that the claims are directed
to the abstract idea of “performing mathematical operations to analyze data
to estimate a value or quantity,” Appellant generally cites to the Federal
Circuit’s holding in Enfish14 for the proposition that the court “cautions

14 See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
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against ‘over’-abstracting the abstract idea to which the claims are allegedly
directed.” Appeal Br. 5. Appellant further argues, “[a]s can be seen, the
Examiner considers every portion of independent claim 1 other than the
features reciting hardware components or communication over a
communication channel to describe the alleged abstract idea of ‘performing
mathematical operations to analyze data to estimate a value or quantity.’”
Appeal Br. 7.
Based upon our de novo review and analysis in TABLE 1, below, we
find this “overgeneralizing” argument concerning the Examiner’s rejection
is moot.
McRO
Appellant argues the court’s decision in McRO15 is applicable to the
appealed claims (Appeal Br. 10), purportedly because the Examiner
overgeneralized the claimed subject matter, and because “the Specification
discusses technical improvements afforded by the claimed features.” Id.
“Like ‘the incorporation of the claimed rules’ in McRO, in independent
claim 1, it is at least the specific operations of ‘generating . . . an OA amount
model,’ ‘not the use of the computer, that “improved [the] existing
technological process” by allowing the automation of further tasks.’”
Appeal Br. 11. We disagree with Appellant’s argument concerning the
relevance of McRO.
We disagree because the claims in McRO recited a “specific . . .
improvement in computer animation” using “unconventional rules that

15 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed.
Cir. 2016).
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relate[d] sub-sequences of phonemes, timings, and morph weight sets.”
McRO, 837 F.3d at 1302–03, 1307–08, 1314–15. In McRO, “the
incorporation of the claimed rules, not the use of the computer,” improved
an existing technological process. Id. at 1314. Appellant does not, however,
identify how claim 1 improves an existing technological process. See Alice,
573 U.S. at 223 (explaining that “the claims in Diehr were patent eligible
because they improved an existing technological process”).
Rather, Appellant argues the improvement over conventional
techniques is embodied in the claims by noting “‘[e]xisting methods, studies,
and analytical tools provide aggregation of OA data from multiple sources.
However, focusing solely on the aggregated data may not provide an
accurate picture of risks associated with OAs’” (Appeal Br. 11 (quoting
Spec. ¶ 3)), and by noting “‘[c]omplex statistical models, such as OAMs
may be utilized to determine a rating for an OA/property or group of
OAs/properties or make OA recommendations based on the large data set
that has been collected.’” Id. (quoting Spec. ¶ 20). According to Appellant,
“this improves the technical field of analytical tools to determine a value of
an OA by enabling the computer system to generate ‘an OA amount model’
and determine ‘an estimated OA amount for the subject property by applying
the OA amount model to the property,’ in contrast to previous analytical
tools that merely aggregated the OA data for a human to then analyze.” Id.
We further disagree with Appellant’s arguments because the “mere
automation of manual processes using generic computers does not constitute
a patentable improvement in computer technology.” Credit Acceptance
Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017).
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In addition, Appellant does not direct us to any evidence that the
claimed generating step corresponds to unconventional rules or otherwise
improves the technical field of analytical tools to determine a value of an
OA.
In TABLE 1 below, we identify in italics the specific claim
limitations in claim 1 that we conclude recite an abstract idea. We
additionally identify in bold the additional (non-abstract) claim limitations
that are generic computer components and techniques, and underline
limitations representing extra or post-solution activity:
TABLE 1
Independent Claim 1 Revised Guidance
A non-transitory computer
readable storage medium
comprising instructions
which, when executed by a
computer system that
includes a data processor
and is connected to at least
one data repository, perform
a method comprising:
A storage medium comprising instructions
(manufacture) is a statutory subject matter
class. See 35 U.S.C. § 101.
A data processor is a generic computer
component; a data repository (memory/
database) is a generic computer
component.
(a) accessing, by the
computer system from the at
least one data repository
through a communication
channel, owner association
(OA) data associated with a
plurality of real estate
properties;
Data gathering is merely insignificant
extra-solution activity that does not add
significantly more to the abstract idea to
render the claimed invention patent-
eligible. See In re Bilski, 545 F.3d 943,
962 (Fed. Cir. 2008) (en banc), aff’d on
other grounds, 561 U.S. 593 (2010)
(“[T]he involvement of the machine or
transformation in the claimed process
must not merely be insignificant extra-
solution activity”); see also MPEP
§ 2106.05(g); and see buySAFE, Inc. v.
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Independent Claim 1 Revised Guidance
Google, Inc., 765 F.3d 1350, 1355 (Fed.
Cir. 2014) (computer receives and sends
information over a network).
A communication channel is a generic
computer component/technique.
(b) generating, by the data
processor of the computer
system, an OA amount model
based at least in part on the
accessed OA data associated
with the plurality of real
estate properties, wherein the
generating comprises:.
“[G]enerating” a model is an abstract
idea, i.e., an observation, evaluation,
judgment, opinion” which could be
performed as a mental process. See
Revised Guidance 52.
Alternatively, “generating . . . [a]
model,” without explicitly reciting a
mathematical formula or relationship,
arguably utilizes a mathematical
calculation, which is an abstract idea.
Revised Guidance 52 and n.12 citing
SAP America, Inc. v. InvestPic, LLC, 898
F.3d 1161, 1163 (Fed. Cir. 2018)
(holding that claims to a ‘‘series of
mathematical calculations based on
selected information’’ are directed to
abstract ideas).
[(b1)] assigning each
property in a geographic
area to a group based at least
in part on a location of each
property;
“[A]ssigning . . . to a group” is an
abstract idea, i.e., an observation,
evaluation, judgment, opinion” which
could be performed as a mental process.
See Revised Guidance 52.
[(b2)] iteratively merging
pairs of geospatially adjacent
groups based on the
characteristics of assigned
properties in the geospatially
adjacent groups being
similar; and
“[M]erging pairs of . . . groups . . . based
on the characteristics of assigned
properties in . . . adjacent groups being
similar” is an abstract idea, i.e., an
observation, evaluation, judgment,
opinion” which could be performed as a
mental process. See Revised Guidance
52.
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Independent Claim 1 Revised Guidance
[(b3)] iteratively inferring an
OA amount for each property
in the geographic area by
inferring an OA amount for
each property in a respective
merged pair of geospatially
adjacent groups for which
OA amount is not known
based at least in part on an
OA amount for a property in
the same group for which the
OA amount is known;
“[I]nferring an OA amount for each
property in the geographic area by
inferring an OA amount for each
property in a . . . merged pair of . . .
adjacent groups” is an abstract idea, i.e.,
an observation, evaluation, judgment,
opinion” which could be performed as a
mental process. See Revised Guidance
52.
(c) receiving, by the
computer system through a
network communication
channel, identification
information associated with a
subject property;
“[R]eceiving . . . identification
information,” i.e., data gathering, is
merely insignificant extra-solution
activity that does not add significantly
more to the abstract idea to render the
claimed invention patent-eligible.
Revised Guidance 55, n.31; see In re
Bilski, 545 F.3d 943, 962 (Fed. Cir.
2008) (en banc), aff’d on other grounds,
561 U.S. 593 (2010) (“[T]he involvement
of the machine or transformation in the
claimed process must not merely be
insignificant extra-solution activity”)
A network communication channel is a
generic computer component/technique.
(d) determining, by the data
processor of the computer
system, an estimated OA
amount for the subject
property by applying the OA
amount model to the
property; and
“[D]etermining . . . an estimated . . .
amount . . . by applying the . . . model” is
an abstract idea, i.e., an observation,
evaluation, judgment, opinion” which
could be performed as a mental process.
See Revised Guidance 52.
(e) storing, by the data
processor of the computer
Storing the estimated OA amount (data)
in a data repository is a generic computer
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Independent Claim 1 Revised Guidance
system through the
communication channel, the
estimated OA amount in the
at least one data repository.
function, or may alternatively be viewed
as mere extra-solution activity.
Spec. 29 (Claims App.).
Under the broadest reasonable interpretation standard,16 we conclude
limitations (a) through (e) recite steps that would ordinarily occur when
performing analytics for a real estate property to analyze data to estimate a
value. See Final Act. 3–10. For example, accessing data associated with
real estate properties is an operation that would generally occur first in any
analysis. Further, assigning properties in a geographic area to a group, and
merging groups based on the similarity of characteristics of assigned
properties in adjacent groups are operations that would ordinarily occur
when estimating an Owners Association amount for a property, whether
initiated person-to-person, on paper, or using a computer.
We determine that claim 1, overall, recites a mental process that may
also be performed by pen and paper. This type of activity, i.e., performing
analytics for a real estate property to analyze data to estimate a value, as

16 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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recited in limitations (a) through (e), for example, and aside from any
computer-related aspects, includes longstanding conduct that existed well
before the advent of computers and the Internet, and could be carried out by
a human with pen and paper. See CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“That purely mental processes
can be unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.”).17
Thus, under Step 2A(i), we agree with the Examiner that claim 1’s
method for estimating an Owners Association value is an abstract idea. We
conclude claim 1, under our Revised Guidance, recites a judicial exception
of receiving and analyzing data to estimate a value, i.e., a mental process,
and thus is an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims are directed to a judicial exception, as we conclude
above, we proceed to the “practical application” Step 2A(ii) in which we
determine whether the recited judicial exception is integrated into a practical

17 Our reviewing court recognizes that “[a]n abstract idea can generally be
described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, “impact the patentability analysis.” Id. at 1241. Further, “[t]he Board’s
slight revision of its abstract idea analysis does not impact the patentability
analysis.” Id. Moreover, merely combining several abstract ideas does not
render the combination any less abstract. RecogniCorp, LLC v. Nintendo
Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math)
to another abstract idea . . . does not render the claim non-abstract.”); see
also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed.
Cir. 2016) (determining the pending claims were directed to a combination
of abstract ideas).
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application of that exception by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception(s); and
(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.
With respect to this step of the analysis, Appellant argues:
In the present case, the Appellant submits that the
features of independent claims 1 and 15 improve another
technology or technical field, include features that are not
“well-known, routine and conventional,” and include
unconventional features that confine the claims to a particular
useful application.
Regarding an improvement to another technology or
technical field, as discussed above, the claim operations
improve the technical field of analytical tools to determine a
value of an OA by enabling the computer system to generate
“an OA amount model” and determine “an estimated OA
amount for the subject property by applying the OA amount
model to the property,” in contrast to previous analytical tools
that merely aggregated the OA data for a human to then
analyze.
Appeal Br. 14.
As to the specific limitations, we find limitations (a) (“accessing . . .
data”) and (c) (“receiving . . . information”) recite insignificant data
gathering. See MPEP § 2106.05(g). Data gathering, as performed by the
steps or functions in Appellant’s claims, is a classic example of insignificant
extra-solution activity. See, e.g., In re Bilski, 545 F.3d 943, 963 (Fed.
Cir. 2008) (en banc), aff’d sub nom, Bilski v. Kappos, 561 U.S. 593 (2010).
We also find limitation (e) (“storing . . . the estimated OA amount”)
recites insignificant post solution activity. The Supreme Court guides that
the “prohibition against patenting abstract ideas ‘cannot be circumvented’
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[by] adding ‘insignificant postsolution activity.’” Bilski, 561 U.S. at 610–11
(quoting Diehr, 450 U.S. at 191–92). On this record, we are of the view that
Appellant’s claims do not operate the recited generic computer components,
i.e., data processor, data repository, and communications channel in an
unconventional manner to achieve an improvement in computer
functionality. See MPEP § 2106.05(a).
We find each of limitations (b) through (b3) and (d) of claim 1 recites
abstract ideas as identified in Step 2A(i), supra, and, contrary to Appellant’s
contentions, none of the limitations integrate the judicial exception of
performing analytics for a real estate property to analyze data to estimate a
value into a practical application as determined under one or more of the
MPEP sections cited above. The claim as a whole merely uses instructions
to implement the abstract idea on a computer or, alternatively, merely uses a
computer as a tool to perform the abstract idea.
Under analogous circumstances, the Federal Circuit has held that
“[t]his is a quintessential ‘do it on a computer’ patent: it acknowledges that
[such] data . . . was previously collected, analyzed, manipulated, and
displayed manually, and it simply proposes doing so with a computer. We
have held such claims are directed to abstract ideas.” Univ. of Fla. Research
Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1367 (Fed. Cir. 2019); see
also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351 (Fed. Cir.
2016) (“Though lengthy and numerous, the claims do not go beyond
requiring the collection, analysis, and display of available information in a
particular field, stating those functions in general terms, without limiting
them to technical means for performing the functions that are arguably an
advance over conventional computer and network technology.”).
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Therefore, the claim as a whole merely uses instructions to implement
the abstract idea on a computer or, alternatively, merely uses a computer as a
tool to perform the abstract idea. Thus, on this record, Appellant has not
shown an improvement or practical application under the guidance of MPEP
section 2106.05(a) (“Improvements to the Functioning of a Computer or to
Any Other Technology or Technical Field”) or section 2106.05(e)(“Other
Meaningful Limitations”).
Therefore, we conclude the abstract idea is not integrated into a
practical application, and thus the claim is directed to the judicial exception.
Step 2B – “Inventive Concept” or “Significantly More”
If the claims are directed to a judicial exception, and not integrated
into a practical application, as we conclude above, we proceed to the
“inventive concept” step. For Step 2B we must “look with more specificity
at what the claim elements add, in order to determine ‘whether they identify
an “inventive concept” in the application of the ineligible subject matter’ to
which the claim is directed.” Affinity Labs, 838 F.3d at 1258.
In applying step two of the Alice analysis, our reviewing court guides
we must “determine whether the claims do significantly more than simply
describe [the] abstract method” and thus transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any “additional
features” in the claims that constitute an “inventive concept,” thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 573 U.S. at 221. Those “additional features” must be
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more than “well-understood, routine, conventional activity.” Mayo, 566
U.S. at 79.
Limitations referenced in Alice that are not enough to qualify as
“significantly more” when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: adding the words “apply it” (or an
equivalent) with an abstract idea18; mere instructions to implement an
abstract idea on a computer19; or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry.20
With respect to this step of the analysis, Appellant argues the claims
“recite additional features that amount to significantly more than the alleged
abstract idea pursuant to Part II of the test set forth in Alice.” Appeal Br. 12.
Appellant further contends, “the combination of the features of independent
claim 1 is novel and non-obvious. As would be appreciated, if the features
of independent claim 1 are novel and non-obvious, then they necessarily
include features that are not ‘well-known, routine and conventional.’”
Appeal Br. 14. Appellant further contends:
In this case, because the prior art does not disclose or
suggest the . . . features of independent claim 1, these claims
satisfy the 35 U.S.C. § 102 and 35 U.S.C. § 103 standards of
anticipation and obviousness. It should therefore be recognized
that the claims also satisfy the lesser “well-understood, routine

18 Alice, 573 U.S. at 221–23.
19 Alice, 573 U.S. at 222–23, e.g., simply implementing a mathematical
principle on a physical machine, namely a computer.
20 Alice, 573 U.S. at 225 (explaining using a computer to obtain data, adjust
account balances, and issue automated instructions involves computer
functions that are well-understood, routine, conventional activities).
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and conventional” requirement set forth in Alice pursuant to
Section 1.B.1 of the Interim Eligibility Guidance.
Appeal Br. 15.
In response, we disagree and note, as the Supreme Court emphasizes,
“[t]he ‘novelty’ of any element or steps in a process, or even of the process
itself, is of no relevance in determining whether the subject matter of a
claim falls within the § 101 categories of possibly patentable subject
matter.” Diehr, 450 U.S. at 188–89 (emphasis added). Our reviewing court
further guides that “[e]ligibility and novelty are separate inquiries.” Two-
Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1340
(Fed. Cir. 2017); see also Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838
F.3d 1253, 1263 (Fed. Cir. 2016) (holding that “[e]ven assuming” that a
particular claimed feature was novel does not “avoid the problem of
abstractness”).
Appellant next quotes the limitations of claim 1 (Appeal Br. 15–16)
and asserts they “are not ‘well-understood, routine and conventional’
operations in the field of analytical tools to determine a value of an OA,”
“[n]or, as is apparent, are they ‘well-understood, routine and conventional’
operations ‘to analyze data to estimate a value or quantity,’ as the Examiner
alleged.” Appeal Br. 16.
Evaluating representative claim 1 under step 2 of the Alice analysis,
we conclude, as discussed below, it lacks an inventive concept that
transforms the abstract idea of performing analytics for a real estate property
to analyze data to estimate a value into a patent-eligible application of that
abstract idea.
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The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, 811 F.3d at 1325. In particular, “[t]he question of whether a
claim element or combination of elements is well-understood, routine and
conventional to a skilled artisan in the relevant field is a question of fact.”
Berkheimer, 881 F.3d at 1368.
As evidence of the conventional nature of the recited method carried
out by instructions stored in the computer readable storage medium of
claim 1, the Specification discloses “[t]he present disclosure relates to
computer processes for performing owner association (‘OA’) analytics for a
real estate property.” Spec. ¶ 2. The Abstract further describes the
invention:
Computer-based processes are disclosed for mining and
analyzing owner association (OA) data associated with a
plurality of real estate properties and generating an OA amount
model that can be used to estimate OA amounts for a subject
property. The OA data may also be analyzed to identify OA
ratings, OA recommendations, OA delinquency actions, OA
contacts information, OA services information, etc. The
disclosed processes can also use the generated OA amount
model to identify OA amount trends, and determine valuations
and investment metrics for real estate properties.
Spec. 50 (Abstract).
As for particular recited elements, i.e., “data processor,” “data
repository,” “communication channel,” “computer system,” and “network
communication channel,” along with the step of “generating . . . a model,”
we find the Specification describes these additional elements in general
terms, without describing the particulars. See, e.g., Spec. ¶ 22 (“As
illustrated, the system includes a set of analytics applications 22 that are
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accessible over a network 24 (such as the Internet) via a computing
device 26 (desktop computers, mobile phones, servers, etc.).”); Spec. ¶ 23
(“these data repositories 30-34 include a database of property data 30, and
database of OA data 32, and any other online data resources 34. Although
depicted as separate databases, some of these data collections may be
merged into a single database or distributed across multiple distinct
databases.”); Spec. ¶ 27 (“As further shown in FIG. 1, the system 20 may
also include one or more interfaces 40 to other (externally hosted) services
and databases. For example, the system may include APIs or other
interfaces for retrieving data from LexisNexis, Merlin, MERS, particular
real estate companies, government agencies, and other types of entities.”);
Spec. ¶ 47 (“As depicted in FIG. 3, generating an OA estimation model
includes selecting modeling method(s)/technique(s) (block 310). Example
modeling techniques may include but are not limited to linear regression,
logistic regression, neural networks, support vector machines, decision trees,
and their derivatives. Suitable modeling methods may include machine
learning/data mining techniques including linear regression, logistic
regression, neural networks, support vector machine, decision tree, etc. A
further modeling technique is a comparables model where the rules and
weights for computing an estimate based on a set of comparable OAs can be
chosen by a human expert.”).
Thus, we conclude the claim limitations may be broadly but
reasonably construed as reciting conventional computer components and
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techniques, particularly in light of Appellants’ Specification, as quoted
above.21
Preemption
Appellant also alleges the claims are patent-eligible because of
“unconventional features that confine the claims to a particular useful
application,” and thus, we infer Appellant argues that the practice of the
claimed invention does not preempt practice by others. Appeal Br. 16; and
see Appeal Br. 17. Regarding preemption, “[w]hile preemption may signal
patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility. . . . Where a patent’s claims are deemed
only to disclose patent ineligible subject matter under the Mayo framework,
as they are in this case, preemption concerns are fully addressed and made
moot.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1362–63 (Fed. Cir. 2015) (“that the claims do not preempt all price
optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract”).
Bascom
Appellant further argues the Federal Circuit’s holding in Bascom22
supports Appellant’s contention that the claims on Appeal support a finding

21 Claim terms are to be given their broadest reasonable interpretation, as
understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
22 Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016).
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that the claims recite “significantly more” under Step 2 of Alice. Appeal
Br. 16. We disagree.
We disagree because, in Bascom, the claims were directed to the
inventive concept of providing customizable Internet-content filtering
which, under Step 2 of the Alice analysis, was found to transform the
abstract idea of filtering content into a patent-eligible invention. Although
the underlying idea of filtering Internet content was deemed to be abstract,
under step 2 of the Alice analysis, the claims carved out a specific location
for the filtering system, namely a remote Internet service provider (ISP)
server, and required the filtering system to give users the ability to customize
filtering for their individual network accounts. Bascom, 827 F.3d at 1349.
Furthermore, there is no evidence of record to substantiate Appellant’s
assertion that the claims recite non-conventional and non-generic
arrangement of known, conventional elements, as in Bascom. Moreover, we
find no analogy between Appellant’s claimed method of performing
analytics for a real estate property to analyze data to estimate a value, and
the Internet content filtering claims in Bascom.
DDR
Appellant further urges “the Bascom claims are analogous to those
involved in DDR Holdings23, and represent an improvement to the
performance of the computer system itself” (Appeal Br. 17 (generally citing
Bascom)), and “the present claims are analogous to the DDR claims for
reasons similar to those stated in Bascom.” Id.

23 DDR Holdings v. Hotels.com, 773 F.3d 1245 (Fed. Cir. 2014)
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We find Appellant’s reliance on DDR (id.) is misplaced as the recited
claims do not improve the computer. In DDR, the claims at issue involved,
inter alia, “web pages displays [with] at least one active link associated with
a commerce object associated with a buying opportunity of a selected one of
a plurality of merchants” (claim 1 of US 7,818,399). The Federal Circuit
found the claims in DDR to be patent-eligible under step one of the Alice test
because “the claimed solution is necessarily rooted in computer technology
in order to overcome a problem specifically arising in the realm of computer
networks.” DDR Holdings, 773 F.3d at 1257. Specifically, the Federal
Circuit found the claims addressed the “challenge of retaining control over
the attention of the customer in the context of the Internet.” Id. at 1258. We
find the rejected claims are dissimilar to DDR’s web page with an active
link, and the Specification does not support the view that the computer
related claim elements are unconventional. See Spec. ¶¶ 22, 23, 27, and 47.
The MPEP, based upon our precedential guidance, provides additional
considerations with respect to analysis of the well-understood, routine, and
conventional nature of the recited computer-related components.
Another consideration when determining whether a claim
recites significantly more than a judicial exception is whether
the additional elements amount to more than a recitation of the
words “apply it” (or an equivalent) or are more than mere
instructions to implement an abstract idea or other exception on
a computer. As explained by the Supreme Court, in order to
transform a judicial exception into a patent-eligible application,
the additional element or combination of elements must do
“‘more than simply stat[e] the [judicial exception] while adding
the words ‘apply it’”. Alice Corp. v. CLS Bank, 573 U.S. __,
134 S. Ct. 2347, 2357, 110 USPQ2d 1976, 1982-83 (2014)
(quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 72, 101 USPQ2d 1961, 1965). Thus, for example,
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claims that amount to nothing more than an instruction to apply
the abstract idea using a generic computer do not render an
abstract idea eligible. Alice Corp., 134 S. Ct. at 2358, 110
USPQ2d at 1983. See also 134 S. Ct. at 2389, 110 USPQ2d at
1984 (warning against a § 101 analysis that turns on “the
draftsman’s art”) . . . .
In Alice Corp., the claim recited the concept of
intermediated settlement as performed by a generic computer.
The Court found that the recitation of the computer in the claim
amounted to mere instructions to apply the abstract idea on a
generic computer. 134 S. Ct. at 2359-60, 110 USPQ2d at 1984.
The Supreme Court also discussed this concept in an earlier
case, Gottschalk v. Benson, 409 U.S. 63, 70, 175 USPQ 673,
676 (1972), where the claim recited a process for converting
binary-coded decimal (BCD) numerals into pure binary
numbers. The Court found that the claimed process had no
substantial practical application except in connection with a
computer. Benson, 409 U.S. at 71-72, 175 USPQ at 676. The
claim simply stated a judicial exception (e.g., law of nature or
abstract idea) while effectively adding words that “apply it” in a
computer. Id.
MPEP § 2106.05(f) (“Mere Instructions To Apply An Exception”).
With respect to the Step 2B analysis, we conclude, similar to Alice, the
recitation of a method that includes a “data processor,” “data repository,”
“communication channel,” “computer system,” and “network
communication channel,” as argued by Appellants, and similarly for
independent claim 15, is simply not enough to transform the patent-
ineligible abstract idea here into a patent-eligible invention under Step 2B.
See Alice, 573 U.S. at 221 (“[C]laims, which merely require generic
computer implementation, fail to transform [an] abstract idea into a patent-
eligible invention.”).
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Therefore, in light of the foregoing, we conclude, under the Revised
Guidance, that each of Appellant’s claims 1–6 and 15–20, considered as a
whole, is directed to a patent-ineligible abstract idea that is not integrated
into a practical application and does not include an inventive concept.
Accordingly, we sustain the Examiner’s § 101 rejection of independent
claim 1, and grouped claims 2–6 and 15–20 which fall therewith. See Claim
Grouping, supra.
2. § 103 Rejection R2 of Claims 1, 3–6, and 15–20
Issue 2
Appellant argues (Appeal Br. 19–27) the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103 as being obvious over the combination of Jost
and Brooks is in error. These contentions present us with the following
issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests “[a] non-transitory computer readable storage medium
comprising instructions which, when executed by a computer system that
includes a data processor and is connected to at least one data repository,
perform a method” that includes, inter alia, the steps of
(b) generating . . . an OA amount model . . . wherein the
generating comprises . . .
[(b1)] iteratively merging pairs of geospatially adjacent
groups based on the characteristics of assigned properties in the
geospatially adjacent groups being similar; and
[(b2)] iteratively inferring an OA amount for each
property in the geographic area by inferring an OA amount for
each property in a respective merged pair of geospatially
adjacent groups for which OA amount is not known based at
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least in part on an OA amount for a property in the same group
for which the OA amount is known[,]
as recited in claim 1?
Principles of Law
“[O]ne cannot show non-obviousness by attacking references
individually where . . . the rejections are based on combinations of
references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). “The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . . Rather,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art.” Id. at 425.
Further, the relevant inquiry is whether the Examiner has set forth
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (cited with approval in KSR, 550 U.S. at 418).
Moreover, during prosecution, claims must be given their broadest
reasonable interpretation when reading claim language in light of the
specification as it would be interpreted by one of ordinary skill in the art. In
re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Under this standard, we interpret claim terms using “the broadest reasonable
meaning of the words in their ordinary usage as they would be understood
by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
the written description contained in the applicant’s specification.” In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
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Analysis
Limitation (b1) — “iteratively merging”
The Examiner finds Jost teaches or suggests the contested “iteratively
merging” limitation, i.e.,
Referring now to FIG. 17, there is shown an example of
geographic subdivision according to the present invention. Each
region 1701 is divided into successively smaller geographic
areas. In the example shown, the geographic areas are ZIP
codes 1702, census tracts 1703, map coordinates 1704, and
assessor parcel number (APN) groups 1705. Other geographic
areas, such as census blocks, or lot blocks, may also be used.
Referring now also to FIG. 18, there is shown a flowchart of the
aggregation (i.e., merging) method. System 100 uses data
describing real estate sales activity for each month of a user-
specified training period, such as eighteen months. For each
month within the training period, system 100 performs the steps
shown in FIG. 18. System 100 initially defines 1804 the
“neighborhood” as the smallest geographical area, such as the
APN group 1705. If there have been any sales in the previous
12 months 1805, system 100 proceeds to step 1813. If not, it
defines 1806 the neighborhood as the next larger geographic
area, the map code 1704. (i.e., iteratively merging geospatially
adjacent groups).
Final Act. 16–17 (citing Jost Figs. 17, 18; col. 8, ll. 32–52).
Appellant contends “Jost does not disclose or suggest ‘iteratively
merging pairs of geospatially adjacent groups based on the characteristics of
assigned properties in the geospatially adjacent groups being similar,’ as
recited in independent claim 1.” Appeal Br. 21. The Examiner allegedly
erred because “[t]he Examiner is interpreting ‘the repeated aggregation of
successively larger geographic areas in Jost’ as disclosing ‘iteratively
merging pairs of geospatially adjacent groups.’” Id.
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The Examiner responds to Appellant’s argument by finding:
The Appellant’s assertions are not persuasive because they do
not specifically articulate a patentable distinction between the
cited portions of any of Jost, Brooks . . . and the limitations for
which it has been cited. In other words, Appellant’s brief at
most points out differences between the claims and the cited
references, but does not show or explain why one of skill in the
art would not have understood the references as teaching the
claimed features, particularly in light of the combination of
references and the principles from the MPEP summarized
above.
Ans. 23.
The Examiner specifically determined:
Jost teaches that various types of geographic areas may
be used as a basis for analysis and these areas are successively
merged into larger, contiguous areas (Final Action, p17). The
aggregation process in Jost is based on predictor variables that
preserve information describing neighborhood characteristics.
(Final Action, p17). In other words, one of skill in the art would
have understood that for Jost’s predictor variables to “preserve
information describing neighborhood characteristics” (Jost,
c8:19–24), those characteristics would have to be similar
among adjacent geographic areas or neighborhoods. To explain
why Jost may be relied upon as reasonably suggesting this
teaching to one of skill in the art, the Examiner points out that
Jost trains the “data set into area characteristics in a flexible
manner, using the smallest geographic areas containing
sufficient data to produce reliable models . . . able to capture
area characteristics for relatively small geographic areas where
the data describing these characteristics are available.” (Jost,
c8:25–31). In other words, even upon aggregation, the
neighborhood characteristics of the aggregated areas remain
based on the ability of the predictor variable to provide a
reliable impression of the sub-areas in the aggregated area. In
other words, the characteristics of the sub areas corresponding
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to those predictor variables must be similar for them to provide
a reliable impress or model.
Ans. 24.
Under the broadest reasonable interpretation, we agree with the
Examiner’s finding that Jost teaches or suggests the disputed “iteratively
merging” limitation of claim 1. We agree with the Examiner because “the
condition on which aggregation might continue or discontinue (e.g., number
of sales) is distinguishable from the condition that determines whether two
adjacent areas might be considered for aggregation (e.g., similar property
characteristics). As such, Appellant has merely pointed out a possible
parallel feature in Jost that does not replace or nullify the features in Jost on
which the rejection is based.” Ans. 25.
Limitation (b2) — “iteratively inferring”
The Examiner finds Jost teaches or suggests the contested “iteratively
inferring” limitation, i.e.,
Neural networks learn from examples by modifying their
weights. The “training” process, the general techniques of
which are well known in the art, involves the following steps:
(1) Repeatedly (i.e., iteratively) presenting examples of a
particular input/output task to the neural network model; (2)
Comparing the model output and desired output to measure
error; and (3) Modifying model weights to reduce the error.
This set of steps is repeated until further iteration fails to
decrease the error. Then, the network is said to be “trained.”
Once training is completed, the network can predict outcomes
for new data inputs. If there have been at least 3 sales (i.e., at
least 3 properties in the group for which the sale amount/
property value is known) in the previous 12 months 1807,
system 100 proceeds to step 1813. System 100 continues to
enlarge the definition of the neighborhood (i.e., merge pairs of
geospatially adjacent groups for which the number of sales is
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insufficient, i.e., an amount is not known) until a predetermined
minimum number of sales have occurred within a
predetermined period of time (i.e., a predetermined minimum
number of sales within the area and timeframe for which a
property amount is known). The minimum number of sales and
the period of time in steps 1805, 1807, 1809, and 1811 may
vary according to the optimal sample size and geographic
specificity required. In addition, the number and size of the
geographic areas may vary. Once the predetermined minimum
number of sales for a particular geographic area has been met,
system 100 determines 1813 medians, averages, and variances
for various property characteristics such as sales price (i.e., an
amount for each property), square feet, number of bedrooms,
etc. (i.e., inferring an amount for each property in the
geographic area by estimating medians, averages, and variances
for various property characteristics).
Final Act. 17–18 (citing Jost col. 7, ll. 24–36, col. 8, ll. 52–66).
Appellant primarily argues against the Examiner’s statements in the
Advisory Action mailed June 16, 2017 which mentioned the Cagan
reference. Appeal Br. 23–25.24 Appellant generally acknowledges the
Examiner’s rejection as articulated in the Final Action by alleging that
neither Jost nor Cagan teaches or suggests the disputed “iteratively

24 The Examiner responds by stating,
Instead of discussing the cited portions of Brooks or analyzing
the combination of Jost in view of Brooks, such as discussing
the rationale supporting the combination of Jost in view of
Brooks, Appellant focuses on an argument by the Examiner in
the Advisory Action mailed June 16, 2017, in which Cagan was
referenced. (App. Br. p23). Appellant overstates the reference
to Cagan in the Advisory Action, implying that it is a new
grounds of rejection, and then discusses a combination of Jost
and Cagan over the following page that fails to address the
combination of Jost in view of Brooks.
Ans. 27.
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inferring” limitation. Appeal Br. 24. In particular, Appellant contends Jost
“operates on known sales prices. There is simply no suggestion in Jost of
inferring a sales price that is not known based on parameters or values of
properties that are known”, as alleged by the Examiner. Id. (internal
quotation marks omitted).
We disagree with Appellant’s arguments, and adopt as our own the
Examiner’s factual findings as articulated at pages 17 and 18 of the Final
Action, quoted above. We further adopt as our own and incorporate herein
the Examiner’s findings in the Final Action at pages 27 through 31 which
further explain the rejection.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner’s reliance on the cited prior art
combination to teach or suggest the disputed limitations of claim 1, nor do
we find error in the Examiner’s resulting legal conclusion of obviousness.
Accordingly, we sustain the Examiner’s obviousness rejection of
independent claim 1, and grouped claims 3–6 and 15–20, which fall
therewith. See Claim Grouping, supra.
3. Rejection R3 of Claim 2
In view of the lack of any substantive or separate arguments directed
to obviousness Rejection R3 of claim 2 under § 103 (see Appeal Br. 27), we
sustain the Examiner’s rejection of these claims. Arguments not made are
waived.25

25 Appellant merely argues, “the dependent claims are allowable at least by
virtue of their dependency on the above-identified independent claims.”
Appeal Br. 27.
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REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 1–4) not in response to a shift in the Examiner’s position in
the Answer, arguments raised in a Reply Brief that were not raised in the
Appeal Brief or are not responsive to arguments raised in the Examiner’s
Answer will not be considered except for good cause (see 37 C.F.R.
§ 41.41(b)(2)), which Appellant has not shown.
CONCLUSIONS
(1) Under our Revised Guidance, governed by relevant case law,
claims 1–6 and 15–20 are patent-ineligible under 35 U.S.C. § 101, and we
sustain the rejection.
(2) The Examiner did not err with respect to obviousness
Rejections R1 and R2 of claims 1–6 and 15–20 under 35 U.S.C. § 103 over
the cited prior art combinations of record, and we sustain the rejections.
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Basis /
References
Affirmed Reversed
1–6, 15–20 101 Subject Matter
Eligibility
1–6, 15–20
1, 3–6, 15–20 103 Obviousness
Jost, Brooks
1, 3–6, 15–20
2 103 Obviousness
Jost, Brooks,
Cagan
2
Overall
Outcome
1–6, 15–20
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FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED